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Federal Court decision: Carroll & Richardson – Flagworld Pty Ltd v PayPal Australia Pty Limited [2020] FCA 371 (19 March 2020)

Our previous post looked at intellectual property issues affecting the way in which the nation brands itself. This time we briefly look at copyright issues in respect of another important national symbol, the Australian Aboriginal flag, arising from a Federal Court decision from March 2020.

The Aboriginal flag has been proclaimed under the Flags Act 1953 “to be the flag of the Aboriginal peoples of Australia”, recognising that is it “the flag of the Aboriginal peoples of Australia and a flag of significance to the Australian nation generally”. The first proclamation was in 1995, although these quotes are from a further proclamation dated 25 January 2008.

Notwithstanding its national significance, the Aboriginal flag is also subject to private copyright ownership by an individual, its designer. Harold Thomas was recognised as the author, and therefore the owner of the copyright in a Federal Court decision in 1997. Private copyright ownership in a nationally important symbol has attracted some controversy. A good explanation of this can be found in this article in The Conversation.

In March, a company with the exclusive licence from Mr Thomas to reproduce the Aboriginal flag on flags, pennants, banners and bunting successfully applied to the Federal Court for an order for preliminary discovery of documents that might lead to identifying a person who may be infringing the copyright. The respondents were companies which the otherwise anonymous alleged infringer had used (eg. PayPal, Australia Post) when selling flags that looked like this (images from judgment):

The Copyright Act provides that the owner, or an exclusive licensee, has standing to take action against infringements. For the purpose of preliminary discovery, the applicant does not need to meet anything more than a simple threshold of showing that there may be a right to obtain relief. In this case, the Court felt that was satisfied, but expressly did not comment on the merit of the case.

The prospective defendant might (or might not) have some defences here – reading between the lines, possibly including a defence that the use of the image was a parody or satire and therefore a fair dealing. But any such defence can only be argued once the identity of the potential defendant is known.

Takeaways:

  • Despite the relative simplicity of its design features, the Aboriginal flag is the subject of copyright, and permission is required to use it
  • Anonymity of potential infringement respondents may be overcome with an application for preliminary discovery of the identity of a person against whom it is claimed there may be a right of relief in the Court.

Link to decision.

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